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February 29, 2016

A few years ago I wrote a blog post in which I explained how a family trip provided an opportunity to illustrate various aspects of IP law. A recent trip that included two days in Yosemite National Park, one of my favorite places on the planet, provided a similar opportunity. That’s because Yosemite is now at the center of a legal spat that can only be termed ridiculous, and then only charitably. But the legal machinations are useful for illustrating what’s supposed to be protectable and what’s not. And for illustrating why people hate lawyers.

As has been covered in various media outlets, the National Parks Service contracts with third parties to operate concessions, such as hotels and retail stores, at various parks. Thus while the NPS itself manages the campgrounds at Yosemite, since 1993 it has been a company called Delaware North (DNC) that operated Yosemite Lodge, the Ahwahnee Hotel and Curry Village in Yosemite Valley, as well as the Badger Pass Ski Area and the Wawona Hotel to the south of the valley, and several stores, such as the stores at Yosemite Village, Crane Flat, and Tuolomne Meadows, in the park. But last year the NPS decided to go with a different concessionaire, Aramark, beginning in March 2016, i.e. tomorrow. This wasn’t a small contract: it’s reportedly worth up to two billion dollars over 15 years.

During the contract negotiations, it came out that DNC had itself registered or otherwise acquired trademarks on the names of several of the places it operated, with respect to both the establishments themselves (like The Ahwahnee Hotel), as well as merchandise such as T-shirts bearing the name “Yosemite National Park”. As part of its negotiating strategy, DNC said that it would be a more cost-effective supplier of services, because any other concessionaire would have to pay tens of millions of dollars for the rights to use DNC’s registered trademarks. If you think that sounds like a thinly-veiled threat, you’re right: in September, DNC filed suit against the US government in the Federal Court of Claims, asserting breach of contract since the government didn’t require Aramark to buy DNC’s “other property” associated with its operations in Yosemite, including trademarks, which it claims is worth $61 million. You can read a copy of the complaint here, and a copy of the government’s response, filed in early January, here. DNC filed a revised complaint in late January. For a discussion of the specific legal issues, intertwined with narrative in more journalistic than legalistic style, there’s this piece written by a lawyer who lives near Yosemite.

As a result – so report the stories that came out in the first half of January, and so says the NPS itself on the Yosemite site – the names on the various hotels will change beginning March 1, and the NPS is even changing the signage in the park to reflect the new names. Interestingly, as of last week, the signs in the park still reflected the well-known names of the places. And I’ll be shocked if there’s a single park ranger who will refer to any of these places by a name other than their long-standing, historic names. It’s kind of like changing the spelling of the Sears Tower to “W-i-l-l-i-s”. That may be how it’s spelled, but it’s still pronounced “Sears”.

Now, perhaps DNC has a good legal case and perhaps it doesn’t; I don’t profess particular expertise in US trademark law. But I did learn a little about trademark basics, and you don’t have to be a lawyer to sense, as some non-Jewish friends where I grew up might have said, that “something’s not kosher” here. What’s not quite right with this picture? I can think of at least two things.

First, trademarks are meant to distinguish the source of goods and services. You buy a Coke rather than a generic version because you want The Real Thing, and you know that the Coca-Cola company provides it. You buy a particular make of automobile because you know that company has a reputation for quality. You buy a particular brand of clothing because clothing made by that company signifies (or confers) a particular status.

In the case of Yosemite, though, no one gives a crap who runs the concessions. It could be DNC, it could be Aramark, it could be Ivan the Terrible or his modern counterparts, Donald the Demonic and Hillary the Hideous. Park visitors just care that they when they stay in one of the park’s hotels they have clean sheets and working showers, and that they come home with a “Yosemite National Park” t-shirt that they bought in the park. It’s the location itself that matters, not the company running the business. And consequently, trademark rights shouldn’t apply here, or at least the way in which they are valued needs to account for this crucial distinction from the normal situation. In its reply brief, filed in early January, the US government said precisely that: that DNC’s estimate that the marks it says it “acquired” were worth $61 is fundamentally flawed because in this case the value stems not from the “marks” but from the location.

Second, and even more basically, the names in question don’t belong to DNC, and the USPTO should never have registered these marks in the first place. The Ahwahnee Hotel was so named when it was built in 1937. There’s been a Yosemite Lodge in roughly the same location – near where Yosemite Falls crashes into Yosemite Valley – since 1915. (See this 1956 USGS map.) For years and years, long before DNC was in the picture, people referred to these places by the names that DNC now says are its own. And of course, the park name is the park name. Trademark attorneys may view it differently, but to the rest of us, when you take something that belongs to the public, it’s called stealing. That’s what's got all of us Yosemite fans so vexed: the brazen attempt to steal from the public.

That this is an attempt by DNC to engage in extortion can be seen from its own behavior until now. For example, when we stayed at Yosemite Lodge last week, there was little to suggest that DNC really perceives itself as the rightful owner of the name “Yosemite Lodge”. The notepads next to the telephone in the room, for example, bore the legend “Yosemite Lodge At The Falls”, without even so much as a “TM” on them. The same was true of the legal notice on the back side of the door informing guests of hotel rates, and the binder with information for guests. That binder, in fact, contained a two-page document setting forth the 78-year pre-DNC history of Yosemite Lodge. Likewise, the information sheet handed to hotel guests gave no indication of any proprietary interest on the part of DNC in the name “Yosemite Lodge”. And the plaque in the reception area of Yosemite Lodge says that the hotel is “Operated by Delaware North Companies Parks and Resorts, Inc.” Not owned by, operated by – because DNC knows darn well that it’s merely a custodian, not an owner. Similarly, the paper prepared and distributed by DNC showing the Badger Pass ski runs and the cross-country ski trails evinces an intent to protect a stylized bear-paw logo, and contains a copyright notice regarding the text, drawings and layouts of the paper itself, but contains no indication that DNC regards the name “Badger Pass” or “Badger Pass Ski Area” as its own. In fact that copyright notice, like the plaque in the hotel lobby, states that DNC operates the ski area under the auspices of the NPS, once again implicitly acknowledging that it is not the owner of the names of the places.

In short, DNC never acted like it owned the “marks” it now says belong to it: real trademark owners mark their marks. DNC knows full well that it doesn’t own the marks in question. It takes a lot of gall to register a mark on something you don’t even own, then threaten litigation over your ill-gotten registrations. Unfortunately, such dishonesty is par for the course for many lawyers.

If the decision to change the names of the facilities were Aramark’s alone, I could understand Aramark’s caving on this issue, even if I don’t think it should have to: under the screwy US civil litigation model, it’s cheaper to change the names and be done with it than to go court, and there’s a non-zero risk that a court could reach the wrong decision and Aramark would lose in civil litigation (although I personally don’t think there’s a jury in the USA that would side with DNC over the NPS on this matter). But there’s no reason under the sun for the government of the USA in the form of the National Parks Service to give in to an extortionist and change the names on the signs in the park, since the NPS itself won’t be infringing any marks if its signs continue to point visitors in the direction of The Ahwahnee, Yosemite Lodge, Curry Village, Badger Pass and the Wawona Hotel.

Rather than capitulate to DNC and in so doing whitewashing part of the park’s history, I think the government should have agreed to indemnify Aramark on the trademark front. And that it should now bring its full weight down on DNC, with the threat of criminal prosecution. For example, every one of DNC’s trademark applications included a declaration from DNC’s Vice-President and General Counsel that the applicant, DNC, was “properly authorized to execute this application on behalf of the applicant” and that he believed that the applicant, DNC, “to be the owner of the trademark sought be registered”. That declaration also included the admission that willful false statement are punishable and may jeopardize the validity of the trademark registration. Why not charge that person, and DNC, with the willful making of a false statement to the PTO?

Even better, fraud is one of the predicate offenses for a prosecution under the RICO statute. Since DNC obtained the registrations in question by fraud – it never owned the marks in the first place, so it lied when it told the PTO it owned them – and these acts occurred on multiple occasions within a 10-year period, the Justice Department should bring RICO charges against DNC and its officers. Something tells me that even the whiff of such charges would be enough to cause DNC to abandon all of the marks in question.

Perhaps the government is taking a long-term view: by continuing to operate the concessions under new names, within a year or two Aramark will be able to provide evidence showing that the revenues at the concession sites are completely unrelated to the names of those sites, at which point it will be able to revert to the long-standing names, since the damage to DNC by using the names Ahwahnee, Wawona, etc., will demonstrably be zero.

The good news is that none of this smelly business will affect any of Yosemite’s iconic sites: there’s no talk of changing the name of El Capitan to El Capital One, or of renaming the Half Dome cables “Half Dome Cable and Wireless”, or of calling the firefalls (which we were fortunate enough to watch, see photo at left) the Firefox falls. And even if, Heaven forfend, that were to come to pass, the places themselves would continue to entrance, enchant and enthrall.

September 29, 2015

Last year we wrote about the Clinton campaign's spectacularly unsuccessful attempt to abuse trademark law in order to silence a critic who sold t-shirts and mugs mocking that campaign's candidate. Now it appears that the leading candidate for the Republican Party's nomination is playing the same game, trying to use trademark law to take a swing at a site called www.stoptrump.us that sells t-shirts with a political message that's not to his liking. By making this non-starter threat, he's placed himself in the company of a failed lawyer. And here you thought that he couldn't demean himself any more. Then again, to quote Mel Brooks, "He's just crazy enough to do it", i.e to go to court, where the judge will laugh at him as he kicks him out onto the street.

August 11, 2015

The big news today in the business world is the announcement by Google that's it's doing a corporate restructuring and has set up a company called "Alphabet" that will be the parent company of Google.

It didn't take more than a few hours before this story appeared in the Jerusalem post about a local company, Alefbet Planners Ltd., that has asserted - for now, evidently, only in the press, not in court - that Google's Alphabet is infringing rights in Alefbet's name, which it says it has been using for 25 years. According to the article, Alefbet asserts that it has international clientele, to which it is known as "Alphabet".

Maybe that's the case, maybe not, but if Alefbet wants to stop Google from using "Alphabet", in Israel or anywhere else, it's going to have to prove its assertions, because even if there's a likelihood of confusion between the two names - more on that in a minute - Alefbet never registered a trademark in Israel, let alone in the USA or anywhere else. Sure, it may be able to assert "passing off", i.e. infringement of an unregistered mark, but to sustain such an action it will need to prove that its name has acquired a reputation that people associate with Alefbet. Good luck with that. When I googled "alfabet planners ltd", none of the top hits referred to this company. And there's no site, or even a domain registration, for alfabet.co.il, or any site for the company, apparently. It's hard to prove the existence of a reputation in a name that's invisible.

Even if Alefbet can prove such a reputation, it will need to show a likelihood of confusion. In the US alone, there are several hundred live and dead marks containing the word "alphabet". If those names weren't deemed to be confusing with one another, how would they be confused with the visually and aurally distinct "alefbet"? Moreover, according to the press release, Alefbet is "third largest planning, design and architecture company in Israel". That doesn't sound like Google's, or Alphabet's, niche. No confusion, no infringement.

The first rule of lawyering is never make a threat that you're not prepared to follow up on. Alfabet's empty threats merely confirm that which we already knew: Alfabet didn't avail itself of good legal counsel. If it had, it would have registered some trademarks by now.

That doesn't mean Google is necessarily off the hook. Given the large number of existing companies and products out there with the name "Alphabet" or a variation thereof in their name, Google has cause to be concerned. For example, Germany's Software AG has some software products named "Alfabet". But although one may wonders what Google's lawyers were thinking, it's still a good bet that Google's legal advisors looked into the matter and think that Google can prevail.

Unless, of course, the name "Alphabet" was chosen by the marketing department, without consulting the company lawyers. But that could never happen, right?

July 12, 2015

If the above title seems to be a non-sequitur, keep reading, because it’s not.

There’s been a lot of writing in the IP world recently about a US federal district court judge upholding the USPTO’s decision to revoke the trademark for “Redskins”, used in connection with the professional football franchise in DC. The NFL, and Redskins team owner Dan Snyder, share the traits of deep pockets and dense skulls, so it will be shocking if an appeal isn’t filed. But even if sustained, the revocation of federal TM registration won’t stop the league from marketing Redskins apparel and, in all likelihood, profiting nicely in the process. No less importantly for the league, the revocation won’t necessarily pave the path for knock-off artists to sell Redskins merchandise. The team has been around for a long time, and it’s reasonable to say that the name “Redskins” and the team logo and colors have at this point in time acquired not only distinctiveness but goodwill. So the NFL will likely still be able to avail itself of state trademark claims, including claims for infringement of unregistered marks (also known as “passing off”), and perhaps trade dress claims as well. Whether it should continue to use “Redskins” as a team name is a separate question, as is whether the same arguments that led to revocation of the federal trademark registration would be good defenses against other claims that the NFL might bring.

The critical point is that, because the NFL is a strong, established business, it can use its existing market position to continue to profit from the Redskins mark, and to out-compete most nascent competition.

This brings me to the connection between the Redskins’ situation and the second half of this blog post title. A common fallacy among the uninitiated is that merely applying for a patent, let alone actually obtaining a patent, will make one rich. I’ve lost track of the number of times I’ve had to disabuse potential clients of this notion. As anyone who’s been in the patent law business long enough knows, a good idea, or even a good patent, isn’t sufficient. Succeeding with a product in the marketplace depends on many, many factors; the procurement of a patent is just one of them.

Sometimes, though, obtaining a patent isn’t even necessary. Case in point: the so-called “kosher lamp”. By way of background, religiously observant Jews will use electric lights on Shabbat, but they’re prohibited by religious law from turning those lights on or off. A common work-around to this issue is to use a timer to control the operation of the light. Sometimes, however this isn’t optimal: if you wake up in the middle of the night when the lights are off and you want to read until you fall asleep again, you’re out of luck.

Enter the “KosherLamp Max”. This is a lamp in which the lighting element resides in a compartment having an opening in its side, through which the light can shine. The twist, pun intended, is that there’s a shade that can be partially or fully rotated into place to cover the opening, thus reducing or completing blocking the light. Judging from the testimonials, it appears that this product is doing well. Yet as far I’ve been able to determine, there are no patents on this product. Nor should there be: I recall a similar lamp in my parents’ in my childhood, and the lamp at right was evidently designed in 1967.

The usefulness of patent protection doesn’t seem to have been lost on the proprietors of the KosherLamp: about 10 years ago, a US patent application was filed for an earlier version of the product, but was abandoned after the first Office Action. That version of the lamp utilized an incandescent bulb rather than a compact fluorescent bulb (which generates less heat), and the claims focused on the product features incorporated to dissipate the heat generated by the incandescent bulb. The same fate awaited the corresponding Israel patent application. Nevertheless, the product is now out there, without the benefit of patent protection.

It will be noted that there is a registered US trademark for a stylized “KosherLamp” logo. So it’s possible that others may make a similar product and market it under a different name. But having been first to market, and having now made something of a name for itself, I suspect that the KosherLamp will continue to be the leader in this particular niche market for some time.

In sum, IP can be a useful part of a business plan, but doesn’t sell products, and rarely will IP alone make anyone rich. And sometimes, it’s not even necessary.

April 02, 2015

This is somewhat off-topic for this blog, but it touches on something of a sore point, namely the indentured servitude to which men’s football and basketball players at major US universities are subjected. Basically, the universities field sports teams, and make huge amounts of money off the men’s football and basketball programs, both through direct ticket sales but primarily through television contracts and merchandising deals. Part of the myth they perpetuate is that the players are amateurs, who only play for the love the game, and that they are fairly compensated in the form of “scholarships”, whereby they pay no tuition and receive an education in exchange for playing. (That myth was partly debunked last year when the National Labor Relations Board in Chicago said that football players at Northwestern University were primarily employees, who spent upwards of 40 hours per week on football-related activities, and therefore could unionize if they chose to do so.)

Through the NCAA, the national body the universities established to oversee their sports programs, they enforce a zero-tolerance policy to ensure that players can’t capitalize on their labors or the fame that some of them gain for their exploits on the field: the players lose eligibility, and often the university is sanctioned. For example, the football team at Ohio State, a perennial powerhouse, got into hot water a few years ago when a star player offered a used jersey for sale on eBay, months after he’d played his last game. Oh, the horror! (See here for a related story about NCAA rules gone wild at the University of Wisconsin.) Invariably, when punishments are doled out, it is players playing years later, who weren’t even enrolled at the university when the original rules infraction took place, who are made to pay the penalty. Common decency and a sense of fair play are not the NCAA’s strong suit.

The University of Kentucky’s men’s basketball team is currently 38-0. If, as is widely expected to happen, it wins on Saturday the semifinals of the NCAA tournament, and then again on Monday in the championship, it will be the first men’s team since 1976 to complete a perfect season and the first ever to go 40-0 in a single season.

Enter a company called “40-0, LLC”, also known as “40and0.com”. That company is currently selling t-shirts, sweatshirts, socks and caps with “40-0” emblazoned thereupon – primarily, though not exclusively, in blue-and-white color scheme associated with U of K – and it has applied to register the mark “40-0” with the USPTO (application no. 86534269, still pending).

UK, for its part, has no such application pending, nor, apparently, is it presently selling similar merchandise. There is, however, a story going around today (see e.g. here and here) about U of K sending a cease-and-desist letter to the owner of the company. As usual with these popular press stories about IP issues, it’s hard to parse out the details from the mis-information. But the gist of it, apparently, can be summarized in this quote from UK’s lawyer: “We are well aware of third parties attempting to capitalize on the historic season of the University of Kentucky men's basketball team…As the University's licensing agent, we are working to vigorously protect UK's trademark rights in the marketplace from those that use the institution's indicia without permission.” Translation: if its team goes 40-0, then UK and UK alone is entitled to capitalize on that fact. Not some forward-thinking entrepreneur, and certainly not the employees, er, “students”, who accomplished the feat.

I’ll leave it to the trademark and unfair competition specialists to comment on the strength, or lack thereof, of UK’s case. I just have one question for UK: if the university were to make money from the sale of 40-0 merchandise, would you share the profits with any of the players who actually accomplished the feat?

June 11, 2014

Last year I helped organize a panel for the AIPLA national meeting on the intersection between IP rights and free speech. One of the speakers was Paul Levy of Public Citizen, who at the time was representing a designer and a purveyor of T-shirts and coffee mugs in a suit filed against some rather humorless goons at the NSA. The NSA had sent a cease-and-desist letter and was threatening the merchants with criminal prosecution for selling wares emblazoned with the logos below:

I was reminded of this when Patently-o reported earlier this week about another group of humorless people, namely Hillary Clinton and her lawyers, who tried to stop the same merchants from selling t-shirts that modified her campaign logo to make a point:

This time, the bozos are asserting trademark and copyright infringement, and have told the online sellers to remove the goods in question. Mr. Levy has told them in lawyerspeak to back off; they have until tomorrow to rescind their takedown demand or he's going to haul them into court, where he will trounce them if the case is ever heard on the merits. You'd think a lady with a law degree from Yale would know better. Particular a lady who aspires to take an oath of office in which she'll swear to uphold the Constitition of the United States, the First Amendment of which protects this kind of speech.

I pointed out the Hillary debacle to some friends who I thought would appreciate it, and one of them was kind enough to send me this link to a T-shirt that as an IP practitioner I find very funny:

UPDATE: Hillary (or her sycophants) remembered what the First Amendment is about and backed down before the expiration of the June 12 deadline. No suit filed, T-shirts again available at CafePress and Zazzle.

February 06, 2012

I wrote some time ago about an offer I received to pay a fly-by-night outfit $1700 so that a client’s published PCT application could be included in a private database that contained information already freely available from WIPO. While IP professionals can readily recognize such ruses, it seems that enough non-professionals fail to ferret out such fakery that it continues to be worthwhile for fraudsters to foment their forgeries: WIPO has a page on its website listing about two dozen names under which such scam artists have been seen to operate in the PCT sphere.

It should perhaps come as no surprise that such trickery is tried in trademark territory too, although WIPO’s warning regarding analogous activities with respect to the Madrid System is considerably shorter than the warning regarding PCT applications. An example: the “Triangle-K” appears on many food items in the United States, and is the subject of European Community Mark No. 02899144. The mark is due to be renewed by the end of October this year; the mark holder was recently sent the letter below (click on the pictures for larger images). Unlike the faux PCT database letter, this letter offers an actual service, namely renewal of the subject mark. Not that that mitigates the sliminess of the organization, which calls itself "Intellectual Property Agency Ltd.": the price quoted for the renewal, 2900 Euros, is nearly double the actual renewal fee (and more than double if the fee is paid electronically); the mark holder is already represented by counsel before the OHIM; and the best reason I can surmise for listing the company’s address on the front page of the letter as a Brussels address but listing the address in the fine print on the back as being in Seychelles is to lure the unsuspecting into thinking that this is a legitimate organization associated with the EU. The terms of the agreement are also fairly draconian. What saved the mark holder from agreeing to pay was the fact that the person who received the correspondence was a lawyer who had enough sense to ask an IP attorney if the letter meant anything, but presumably there are enough unwary mark holders out there to make this venture a profitable one for its proponents.

Update: I just saw a post on the IPWatchdog site about a similar notice sent to Gene Quinn, the proprietor of that site and the owner of the IPWatchdog mark.